Overview

Josh Pond counsels clients on intellectual property challenges and opportunities, at the cross-roads of U.S. intellectual property in Washington D.C. Josh litigates patents before the U.S. International Trade Commission, the U.S. Patent & Trademark Office, the Eastern District of Virginia, and around the country. With this trial perspective, Josh advises startups and corporations on IP portfolio strategy, to bolster them for upcoming enforcement challenges.

Josh co-leads the firm’s ITC Section 337 team—shortlisted by Managing IP for “2018 ITC Firm of the Year.” Over the past year, Josh has served as lead ITC counsel for three complainants and eleven respondents across nine investigations. Over the past decade, Josh has been to ITC trial for a dozen Fortune Global 500 companies, most recently in April 2017 for Broadcom Corporation and seven of its semiconductor chip customers. Recent patent validity challenge highlights at the U.S. PTO include a complete five-patent defense victory, as well as a two-patent offense win, with one win affirmed at the Federal Circuit and another on remand. In district court, Josh has brought clients from complaint, to Markman hearings, and through jury trial.

Prior to joining the firm, Josh was principal in the Washington, D.C. office of an international law firm where he was a leader of its Post Grant Practice Group, with his practice centered on patent litigation and strategic counseling. Prior to law school, Josh served as a Field Artillery Captain in the U.S. Marine Corps at Camp Pendleton, California for seven years. He was deployed to the Persian Gulf and awarded the Defense Meritorious Service Medal. Josh leads the firm’s pro bono Veterans Initiative in the D.C. office.

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Experience

Defended one of the world’s largest semiconductor companies Broadcom and its seven downstream customers — Technicolor, HTC, ASUS, Comcast, Arista, NETGEAR, and ARRIS — in patent infringement and importation investigation brought by Tessera Technologies related to semiconductor chip packaging technology. Prevailed in two of three asserted patents at trial before Administrative Law Judge Sandra Dee Lord and convinced the commission to review findings on the third patent (Certain Semiconductor Devices).

Asserted Broadcom’s patented streaming audio multimedia technology in investigation seeking to prevent the importation of wireless speakers and other audio systems by Tessera subsidiary DTS and eight of its downstream technology customers (Certain Wireless Audio Systems).

Obtained complete victory for Reebok against RBX Active in a patent infringement and importation investigation related to athletic shoe sole functionality after all respondents ultimately agreed to cease importation of the accused products (Certain Athletic Footwear). Currently pursuing damages in Oregon district court.

Defended ARRIS in patent infringement and importation investigation brought by Rovi and Tivo, concerning on-screen programing guide technology; completed five-day trial before Administrative Law Judge David P. Shaw to win final determination of no violation by ARRIS. (Certain Digital Video Receivers).

Secured a favorable settlement for ARRIS in patent infringement and importation investigation brought by OpenTV/Nagra/Kudelski involving digital content and voice command technology, as part of an aggressive multi-jurisdictional patent licensing strategy against Comcast and its suppliers (Certain Digital Television Set-Top Boxes).

Defended ScentAir against competitor Prolitec in E.D. Wisconsin patent infringement case related to commercial scent diffusion products (Case No. 12-CV-483-RTR). Successfully petitioned for inter partes review of both patents-in-suit, resulting in stay of litigation. The USPTO's Patent Trial and Appeal Board ruled in favor of client ScentAir, finding all challenged claims unpatentable. The Federal Circuit affirmed as to one patent and remand is pending as to the second (IPR Nos. 2013-00179 and -00180; Appeal Nos. 2015-1017 and 2015-1020). http://www.law360.com/articles/734448/fed-circ-backs-ptab-s-air-freshener-patent-invalidation

Represented Celanese in ITC investigation against three Chinese manufacturers, and continuing to actively represent Celanese in other litigation matters, including five pending IPR proceedings, in which Celanese has challenged numerous overly-broad competitor patents relating to the production of acetic acid, a critically important commodity building block used to manufacture plastics, non-caloric sweeteners, filter products, paints, and adhesives (Certain High-Potency Sweeteners).

Favorably settled ITC investigation for Levi Strauss & Co. in RevoLaze’s investigation against 17 jeans brands related to laser fading of denim. (Certain Laser Abraded Denim Garments).

Developed intellectual property portfolio and strategy for startup in the business-to-business cloud platform space as lead of client’s IP Strategy Group, supporting explosive growth to a $300-million market valuation, with more than 150 employees in the U.S. and Europe, and recent expansions to China and Japan.

Represented Respondent Samsung against Complainant Ericsson in patent infringement and importation investigation related to smartphones, telecommunications base stations, tablet computers, televisions and media players, particularly as to domestic industry issues. Completed six-day trial before Administrative Law Judge David P. Shaw, resulting in favorable settlement of the world-wide, multi-jurisdictional dispute (Certain Electronic Devices).

Defended against Complainant HTC in patent infringement and importation investigation related to smartphones and tablets, particularly as to domestic industry and remedy issues. Completed six-day trial before Administrative Law Judge Thomas B. Pender, resulting in favorable settlement of the world-wide, multi-jurisdictional dispute (Certain Electronic Devices).

Counseled web company with more than 100 million hits per month on numerous patent acquisitions, including in-depth due diligence on claim scope and validity.

Prevailed on behalf of Patent Owner S&S Precision, securing denial of post-grant review institution as to certain key S&S Precision patent claims to tactical signaling devices. The Patent Trial & Appeal Board concurred with S&S Precision’s Preliminary Response, finding Core Survival failed to demonstrate obviousness of the non-instituted claims with its Petition; the Board further denied Core Survival’s request for rehearing on the issue (PGR2015-00022).

Guided co-founders of sporting goods startup on patent matters, including prosecution, product clearance, licensing and portfolio strategy; also conducted licensing negotiations with competitor.

Lead ITC counsel for respondents Sennheiser in patent investigation involving Bluetooth headphones. Settled favorably based on aggressive defense development before significant discovery or litigation activity (Certain Wireless Headsets).

Defended Semiconductor Energy Laboratory (SEL) in unfair competition and injurious falsehood case in D. District of Columbia related to organic light-emitting diode technology. Judge John D. Bates granted client SEL’s motion to dismiss.

Represented Complainant Cypress Semiconductor in initial phases of patent infringement and importation investigation related to semiconductor chips (Certain Static Random Access Memories).

Counselled plaintiff-patentee Cargill in complex Markman hearing and jury trial in D. Oregon related to high stability canola oil, resulting in determination of patent infringement, validity and damages after ten-day trial before Judge Michael W. Mosman.

Defended LG Electronics in patent infringement case in E.D. Texas (2007) related to media download management. Successfully obtained stay of litigation pending reexamination. Reexamination resulted in cancellation of all claims, with only three narrow new claims emerging from USPTO. Settled shortly thereafter on terms entirely favorable to client.

Represented Complainant Microsoft against Respondent Alcatel-Lucent in patent infringement and importation investigation related to computer telephony and unified messaging. Chief Administrative Law Judge Paul J. Luckern found infringement and validity for Microsoft after five-day trial (Certain Unified Communications Systems).

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Education

Georgetown University Law Center, J.D. (2004) cum laude

Stanford University, B.S., Mechanical Engineering (1994)

Stanford University, B.A., Political Science (1994)

Admissions

District of Columbia (2005)

Virginia (2004)

Court Admissions

U.S. Patent and Trademark Office (2006)

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Federal Claims

U.S. District Court for the Eastern District of Virginia

U.S. District Court for the District of Columbia

U.S. District Court for the Eastern District of Wisconsin

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Professional & Community Activities

PTAB Bar Association, Trials Committee Member (2016-Present)

International Trade Commission Trial Lawyers Association (ITCTLA), Member (2008-Present)

Graduate, National Institute for Trial Advocacy (NITA) Deposition Program (San Diego 2006), Expert Deposition Program (San Diego 2006), and Trial Skills Program (New Orleans 2008)

Intellectual Property Owners Association (IPO), Standing Committee on the International Trade Commission, Member (2012-2014)

The HNBA/Microsoft Intellectual Property Law Institute (IPLI), Member

Leads Kilpatrick Townsend’s Pro Bono Veterans Initiative

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